WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kværner ASA v. Tele og Media Consult as

Case No. D2001-0809

 

1. The Parties

The Complainant is Kværner ASA, PO Box 169, N-1325 Lysaker, Norway, represented by Mr. Peter Nitter and Ms. Helene Uglem of Schjodt law firm, Oslo, Norway ("Complainant").

The Respondent is Tele og Media Consult AS, Kjøpmannsgt 5, N-7013 Trondheim, Norway, represented by Mr. Jan Rangul ("Respondent").

 

2. The Domain Name and Registrar

The dispute concerns the domain name <kværner.net>.

The Registrar is Tucows Inc., Toronto, Ontario, Canada.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the Complainants Complaint in electronic form on June 19, 2001 and in hard copy on June 22, 2001, stating Register.com as the Registrar for the disputed Domain Name.

Complainant made the required payment to the Center.

On June 25, 2001, the Center transmitted via e-mail to Register.com a request for registrar verification in connection with this case, and received the same day a note from Register.com that the Domain Name was not registered with them.

After further research, Register.com informed by e-mail the Center on July 6, 2001, that the Registrar was Tucows.

On July 9, 2001, the Center transmitted via e-mail the request for registrar verification to Open SRS / Tucows. The Center received, on July 10, 2001 the Registrars Verification Response, confirming that (1) Tucows is the Registrar of the Domain Name, (2) the Registrant is Tele og Media Consult AS, (3) Mr. Jan Rangul is the Administrative and Billing Contact, and Mr. Erik Stian Tefre the Technical Contact, (4) the UDRP apply as per section 7 of the Registration Agreement, and (5) the Domain Name is in "on hold" status.

On July 12, 2001, the Center requested the Complainant file an Amendment to the Complaint identifying the Registrar as Tucows Inc. On July 23, 2001, the Center received the Complainants Amendment by e-mail and two days later by hard copy.

The Center verified that the Complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").

On July 25, 2001, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondents Response was due by August 14, 2001, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondents default as it considers appropriate, (4) the Complainant had elected for the matter to be decided by a single panelist.

The Respondent filed the Response via e-mail on August 14, 2001. A hardcopy of the Response was received by the Center on August 16, 2001.

On August 16, 2001, the Center received from the Complainant a Request for Permission to postpone the case for 14 days, in order to file a response to the Respondents accusation of Reverse Domain Name Hijacking. The Center informed, via e-mail, Complainant the same day that it is in the sole discretion of the Administrative Panel to determine whether to grant such request or not.

On August 27, 2001, the Center received from the Complainant a full Response dealing with the Reverse Domain Name Hijacking issue, but also including further arguments on the dispute as such. On August 28, 2001, the Center informed the Complainant on the Rules, and that it up to the Panel to decide whether or not supplemental filings are necessary and will be considered in the decision.

On August 28, 2001, the Center received a letter from the Respondent, asking the Panel to ignore Complainants submission of August 27, 2001.

On August 28, 2001, in view of the Complainants designation of a single panelist the Center invited Mr. P-E H Petter Rindforth to serve as a panelist.

Having received Mr. Rindforths Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on August 29, 2001, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was September 12, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

Having reviewed the basic facts and circumstances in the case, the Panel issued on September 5, 2001, a statement to the Center that the Panel a) did not find it necessary to grant any postponement of the case, and b) would not accept any further submissions from the parties. The Center communicated this statement to the parties via e-mail the same day. It is to be noted, that both parties have continued to send e-mail messages to the Center after September 5, 2001.

The Administrative Panel shall issue its Decision based on the Complaint, the Amended complaint of July 23, 2001, the Response, the Policy, the Rules, and the Supplemental Rules. The Panel will, in issuing its Decision, disregard any submissions filed by the Parties after August 14, 2001. The case before the Panel was conducted in the English language.

 

4. Factual Background

Complainant is a Norwegian registered business, but has a London-based international headquarters. The annual revenue is approximately USD 6 billion, with some 35,000 permanent staff located in almost 35 countries. Complainants activities are with engineering and construction ("industrial technology provider"), organised in two core business areas: Engineering / Construction, and Oil & Gas. Other activities include shipbuilding and pulping equipment.

The Complainant has fourteen registered trademarks, all of which are variants of the two main marks "KVÆRNER" and "KVAERNER", the latter registered in Norway under No. 162770 and No. 162771 for, among other things, computer-programming.

Outside of Norway, both word marks and device marks, such as "Kværner LC 5 Engine", "Kværner LC 10 Engine", "Kværner LC 15 Engine", "Kværner LC 20 Engine", "KVÆRNER innovation WHITBREAD TEAM", "KVÆRNER ENGINEERING", and "KVÆRNER GROUP" are registered and applied for in more than 60 countries all over the world. Complainant has provided a list of those trademarks (Annex 3 of the Complaint), however no copies of Certificates of Registration.

The Complainant also administers web pages under the domain names <kvaerner.no> and <kvaerner.com.>

The Respondent registered the Domain Name on February 26, 2001 (Annex 1 of the Complaint), however no information is provided on Respondents current business activities except from what is stated below.

 

5. Parties Contentions

A. Complainant

The Domain Name contains the letter æ, and is in a so-called test-bed status. Because of this it cannot yet be used actively as a web-address. However, as appears from Sankyo Co. Ltd. v. Zhu Jiajun, Case No. D2000-1791, the test-bed status does not prevent the case from being tried.

 

The Complainant is the owner of the trademarks KVAERNER and KVÆRNER, and has for several decades successfully used these trademarks in the areas of industrial technology. The marks have become extremely well-known, and hold a substantial reputation.

The Domain Name is identical or confusingly similar to Complainants trademarks. Even if the suffix .net is meant to distinguish the sites of network providers and .com was meant to distinguish commercial sites, there is today little difference between the TLD:s .com, .net and .org. These suffixes are therefore not relevant in judging the likelihood of confusion.

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating any such mark.

Complainant states that the registration and use of the Domain Name constitutes an infringement of the intellectual property rights of the Complainant, and that the Respondent has no intellectual property rights to the domain name.

The Complainant further states that the Respondent is registered in the Norwegian Register for Business Enterprises as conducting business-like services not concretised under other business classifications, and that according to the Internet pages of the Respondent their business mainly consist of marketing activities, sale and inquiries by phone and follow-ups of campaigns.

The Complainant therefore draws the conclusion that the Respondent has no rights or legitimate interests in respect of the domain name.

As to the question of bad faith, the Complainant states that it must be clear to the Respondent, who is a Norwegian company that the Domain Name can only refer to the Complainant.

Respondent was by letter of April 24, 2001 (in English) and of April 26, 2001 (in Norwegian) informed that the registration of the Domain Name represents a violation of the Complainants rights, and was requested to transfer the Domain Name to the Complainant.

By letter of May 3, 2001, Respondent claimed that they had the right to hold the Domain Name, but gave no reason for this claim. In the same letter Respondent stated that if the circumstances was right, they would consider transferring the Domain Name to the Complainant, but that the offer of NOK 5000, - (made by Complainant during a telephone-conversation) was to small.

The Complainant replied on May 15, 2001, repeating its claim for transfer of the Domain Name and informing the Respondent on the legal consequences on holding the Domain Name, including the possibility of a UDRP.

In a letter of May 16, 2001, the Respondent repeated that they had right to hold the Domain Name, and that they did not wish to reveal the reasons but that the alleged right could be documented in a potential lawsuit. Further, the Respondent admitted that the Domain Name could be useful for the Complainant, and made an offer to sell the same for NOK 35.000, -.

According to the Complainant, the Respondent raised the price for the Domain Name to NOK 50.000, - during a telephone conversation with Complainant on May 21, 2001, however still without providing any further information on Respondents alleged rights to the Domain Name.

By a final letter of June 1 2001, the Respondent was informed that because of the impossibility of reaching a solution, a WIPO complaint would be filed without further notice, and that the Complainant were not interested in paying more than NOK 5.000, - for the Domain Name.

Copies of the abovementioned correspondence are attached the Complaint as Annex 5.

The Complainant concludes that the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant. The Complainant further concludes that the Domain Name has been registered and is being used in bad faith.

The Complainant requests, in accordance with Paragraph 4(b)(i) of the Policy, that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.

B. Respondent

The Respondent contests all allegations of the Complaint and requests the Administrative Panel to deny the remedies requested by Complainant.

The Respondent states that the case was filed in bad faith and that the Complainant deliberately has abused the administrative proceedings in an unscrupulous attempt to reverse domain-hijack the domain name of Respondent, and therefore asks the Panel to make a finding of reverse domain name hijacking.

The word "kværner" has multiple meanings in Scandinavian languages; it can mean "miller" as in Mr. Miller or it can refer to grinding machines or kitchen grinders ("grinders"), and it describes the action of "grinding". Further, bicycles and motorcycles are often referred to as "grinders" in Danish slang.

"Kværner" is also the source of many place names, one of them being the Kværner area, located in a small valley near Oslo, which has given its name to Kværner Brug (and several other entities including a local farm) - the company that later grew into the international company Kværner ASA, represented by Complainant.

"Kværner" is a common surname shared by many people throughout Scandinavia.

The Respondent concludes that although the Domain Name is spelled similar to the Complainant's trademarks, the word "kværner" has multiple meanings, most of which differ greatly from those associated with the Complainant's trademarks.

The claim by the Complainant that the Respondent's future use of the Domain Name will cause confusion with the Complainant's trademarks is completely unreasonable.  Since the Domain Name is not yet resolving for technical reasons, the alleged confusion concerns a hypothetical situation that has not yet arisen.  However, when the Respondent some time in the future will be able to use the Domain Name, the multitude of meanings associated with the word "kværner" in Scandinavia will make the Respondent's responsible use of the domain name unlikely to cause any confusion with Complainant's trademarks.

The Complainants statement that "the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating any such mark" is irrelevant as Complainant has no exclusive monopoly on the use of common word "kværner"

The Respondent states that the repeated claim by the Complainant that the Respondent has no legitimate rights to the domain name is completely groundless as the Respondent has the full rights to register the Domain Name which could be used by the Respondent in a number of ways without infringing the Complainant's trademarks.

The Respondent claims to have registered the Domain Name to be used for surname email-services.  Many Internet users are likely to find ".com" and ".net" versions of their surname more attractive than using the new .name TLD, and thus Respondent believes his current plans to offer email services for Scandinavian surnames has commercial potential.

Respondent contests the allegations of Complainants that the Domain Name was registered in bad faith as "it must be clear to the Respondent, who is a Norwegian company, that the domain name kværner.net can only refer to the Complainant". Once again, the Respondent refers to that Complainant is only one of many entities with this name, that there are many people with the surname Kværner, and that there traditionally has been, and still is, many different meanings to the word "kværner''. 

According to the Respondent, the reason why no information on Respondents business activities and planned use of the Domain Name was given during the pre-UDRP correspondence between the parties, is the "Complainants well known history of harassing legitimate domain name owners". Respondent exemplifies this alleged behaviour of the Complainant by referring to Kværner ASA v. Brynjar Steinsøy, Case No. D2001-0216.

The Respondent also points out that his offer to sell the Domain Name for the equivalent of USD 3.500 must be considered a very generous proposal, considering the fact that Complainant is an international business with USD 6 billion in annual revenues. As stated in the Deutsche Welle v. DiamondWare Limited, Case No. D2000-1202, the consideration of an offer, or the provision of an offer, does not demonstrate bad faith on part of the Respondent. 

The Respondent denies that he made a second offer to sell the domain for NOK 50.000.

Reverse Domain Name Hijacking

The Respondent finds it hard to believe that the Complainant had no knowledge regarding the generic nature of the word "kværner" in Scandinavian languages and the common occurrence of Kværner as a surname. Since these facts have important relevance for the case, it is highly suspicious that the Complainant has failed to address any of these issues in it's lengthy complaint.

Complainant, represented by a professional lawyer, must also be presumed to have had at least a basic understanding of elementary trademark law and that the Complainant cannot claim any exclusive rights to the word "kværner".

It must have been completely clear to the Complainant that the Respondent had not done anything that can reasonably be described as infringement on the Complainant's trademarks. 

The Respondent states that the likely motive of filing the Complaint has been to reverse-hijack the Domain Name, because the Complainant repeatedly submits cases to WIPO that do not have any merit in an attempt to systematically abuse the dministrative proceedings.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondents Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

1. Identical or Confusing Similarity

The Complainant claims to be the owners of the registered and well-known trademarks "KVAERNER" and "KVÆRNER", as well as a number of variations of these main trademarks. The Complainant has not provided copies of Certificates of Registration for any of these marks, but the Panel has based on the list of Annex 3 and the Annual Report (Annex 4) of the Complaint no reason to question this claim as a fact.

The relevant part of the Domain Name is <kværner.net>.

Accordingly, the Panel finds that the Domain Name is identical to the Complainants trademark "KVÆRNER", as well as confusingly similar to Complainants trademark "KVAERNER".

2. No Rights or Legitimate Interest

Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purpose of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of the Respondent.

The name "KVÆRNER" is an established and well-known trademark of the Complainant, and is also the significant part of the Complainants company name Kværner ASA.

The Respondent has not filed any evidence to prove any rights to use the Complainants trademark and has not contested the Complainants statement that Respondent is not an authorized agent or licensee of the Complainants products or services.

Has the Respondent any legitimate interest in the Domain Name? Paragraph 4(c) of the Policy sets out certain circumstances that, in particular but without limitation, demonstrates Respondents rights or legitimate interest in the Domain Name:

(i) that the Respondent, before any notice to him of the dispute, have used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services,

(ii) that the Respondent, as an individual, business or other organization, have been commonly known by the Domain Name, even if the Respondent has not acquired any trademark or service mark rights, or

(ii) that the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark of the Complainant.

The disputed Domain Name in this case is registered under the multi-lingual test-bed. It contains national characters that are currently, due to technical reasons, not possible to use in the same extent as domain names using Basic Latin characters of the Unicode. It is therefore practically not possible for the Respondent to actively use the Domain Name.

However, the Respondent could still have made demonstrable preparations to use the Domain Name. Respondent has informed that the purpose of the Domain Name is to use it for surname email-services, but has not provided any business plans or any other specific information on this alleged use.

The Respondent has not claimed to be commonly known by the Domain Name.

It is uncontested that the Respondent is not making a legitimate non-commercial use of the Domain Name. It must be assumed that if the information from the Respondent that the Domain Name is registered for the purpose of a "surname e-mail service", such service will be financed by fees or banners, making the use commercial. The Respondent has not stated that such service should be free of charge. Further, from the correspondence between the parties, it is obvious that the Respondent sees the Domain Name as an asset to trade.

The Respondent argues that the word "kværner" has multiple meanings in Scandinavian languages, and lists a number of examples of such multiple meanings, including surnames, names of places, Danish slang and references to grinding machines. According to the Respondent, these multiple meanings make the word "kværner" free to use also for others than the Complainant. The question is therefore if the Respondent is making fair use of the Domain Name "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark of the Complainant"?

This is a case between two Norwegian companies, and the Panel will therefore only take into consideration multiple meanings of the word "kværner" in the Norwegian language and for people in Norway. The Panel has no reason to doubt that "kværner" originates from the Kværner area of Oslo, Norway, nor that the dictionary meaning of the word is "grinding" or similar, or that there exists a number of people in Norway with Kærner as their surnames. However, the Respondent being based in Trondheim, far north of Oslo has not shown any connection with the Kværner area, nor is he in the grinding business. As stated above, the Respondents surname or commonly known nickname is not Kværner.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

3. Registered and Used in Bad Faith

As stated above, both the Complainant and the Respondent are domiciled in Norway, being the Complainants original and presumably most important market.

The mere fact that the Complainant has been able to register the dictionary words "KVAERNER" and the national equivalent "KVÆRNER" as trademarks in Norway indicates that the word is well known and has acquired distinctiveness as a trademark for the Complainant.

The Panel concludes that the Respondent was well aware of the existence and business activities of the Complainant, prior to the registration of the Domain Name.

The Respondent has not been able to prove that he registered the Domain Name for the purpose of establishing a personalized e-mail service. There are no shown business plans for such service. The Respondent states that he plans to offer e-mail services for "Scandinavian surnames", but - to the knowledge of this Panel has so far only registered one the disputed Domain Name.

The Panel therefore concludes that the Respondent registered the Domain Name specifically with the Complainant in mind.

As discussed above, the Respondent has, for technical reasons, not used the Domain Name in the sense of pointing the same to an active web site or similar.

As established in a number of prior cases (for example Case No. D2000-0003) the requirement of the Policy of a domain name "being used in bad faith" is not limited to positive actions.

The Respondent states that "the consideration of an offer, or the provision of an offer does not demonstrate bad faith on part of the Respondentin a situation were someone is interested in obtaining a domain name rightfully belonging to someone else". That is correct, but the key words here are "a domain name rightfully belonging to someone else". The Respondent has not shown that he registered the Domain Name in good faith.

From the May 16, 2001 letter to the Representative of the Complainant (Annex 5 of the Complaint), it is obvious that Respondent realize that the Domain Name is of value for the Complainant "we do see that Your client may make use of the domain, and this is why we opened up for transfer. Thus we offer the domain name for the price of NOK 35.000,-".

Considering all the facts and circumstances of this case, the Panel concludes that the Respondent registered the Domain Name primarily for the purpose of selling or otherwise transferring the Domain Name to the Complainant, for a sum that is in excess of Respondents documented out-of-pocket costs directly related to the Domain Name.

The Panel concludes that the Respondent registered and is using the Domain Name in bad faith.

The Complainant has requested transfer of the Domain Name.

Reverse Domain Name Hijacking

The Respondent suggests that the Complainant is guilty of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in paragraph 15 (e) of the Rules as filing the complaint "in bad faith, for example in an attempt to harass the domain-name holder".

Respondent has accused the Complainant for "repeatedly submitting cases to WIPO that do not have any merit in an attempt to systematically abuse the administrative proceedings". As to the best knowledge of the Panel, Complainant have only been involved in one prior domain name dispute, namely Kværner ASA v. Brynjar Steinsøy (Case No. D2001-0216). Apart from the fact that the circumstances in the said prior case were completely different from the present dispute, only one prior case cannot form any ground for Respondents grave accusation for Reverse Domain Name Hijacking.

The Panel therefore states that this is not a case of Reverse Domain Name Hijacking.

7. Decision

The Panel concludes (a) that the Domain Name <kværner.net> is identical and confusingly similar to the Complainants trademarks KVÆRNER and KVAERNER, (b) that the Respondent has no rights or legitimate interest in the Domain Name, and (c) that the Respondent has registered and used the Domain Name in bad faith.

Therefore, pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <kværner.net> be transferred to the Complainant Kværner ASA.

 


 

P-E Petter Rindforth
Sole Panelist

Dated: September 12, 2001